Commonly used term in food industry given narrow scope of protection


In Mövenpick Holding AG v Exxon Mobil Corporation (2011 FC 1397, December 1 2011), the Federal Court has assessed clearly descriptive trademarks and confusion between marks in the Canadian marketplace. It was an appeal from the registrar of trademarks' decision to allow the registration for the trademark MARCHÉ EXPRESS.

Mövenpick Holdings AG owns the registration for the mark MARCHÉ in association with the operation of restaurants in Canada. Exxon Mobil Corporation applied for the registration of the mark MARCHÉ EXPRESS in association with convenience store and fast food services offered at its ESSO-branded gasoline stations, claiming use since July 19 2001. 

In its opposition, Mövenpick attacked Esso's application on the grounds that:

  • it was clearly descriptive of the applied for services; 
  • it was not registrable as it was confusingly similar to Mövenpick’s registration; and
  • the first use date claimed could not be established by Esso. 

The registrar of trademarks refused all grounds of opposition and allowed the application. 

The issues before the Federal Court were:

  • the standard of review;
  • the reasonableness of the registrar’s decision in light of the evidence before her; and 
  • the assessment of the new evidence and whether it would have affected the decision under appeal.

As new evidence, both parties submitted affidavits of linguists with the objective to assess the meaning of 'marché express' in French. Additionally, Mövenpick submitted:

  • new evidence showing use of the mark MARCHÉ EXPRESS by third parties in association with convenience store services; and
  • evidence to establish the extent to which its mark MARCHÉ had become known in Canada. 

Esso submitted survey evidence to demonstrate that there was no likelihood of confusion as asserted by Mövenpick. It should be noted that Mövenpick argued that the survey evidence was faulty in establishing confusion, but supportive in its claim that the phrase 'marché express' is clearly descriptive of the services.

The purpose of the 'clearly descriptive' objection is to prevent one person from monopolising a common word to a trade. It is established that 'clearly' means “easy to understand, self-evident or plain” and, specifically, preserves the registrability of suggestive trademarks.

The evidence submitted before the registrar showed widespread use of the word 'marché' in association with convenience store services, grocery stores, retail food stores and restaurant and catering services, mostly through the French Canadian Province of Quebec. It was the registrar’s finding that, while the term 'marché' was commonly used in association with “convenience store” services, the combined words 'marché' and 'express' were at best suggestive of the ease of purchasing items at a convenience stores. The Federal Court found the registrar’s decision to be reasonable based on the evidence before her.

In assessment of the new evidence, the Federal Court found that the linguists' affidavits, which discussed rules of grammar, semantics and linguistic constructions regarding the interpretation of the words 'marché' and 'express', were unnecessary and not helpful. Further, it noted that, if anything, the linguists' evidence supported the registrar’s finding that the combined expression 'marché express' is not a linguistic construction which flows naturally in the French language. In review of Mövenpick’s evidence of use by third parties, the court noted that it was vague and unsatisfactory. 

The court concluded that there was nothing in the new evidence that would have persuaded the registrar to change her mind. The expression 'marché express' was not clearly descriptive of the services as applied for by Esso.

The purpose of a confusion objection is to prevent confusion in the marketplace. It is established that the test for confusion is a matter of first impression in the mind of a casual consumer somewhat in a hurry. All surrounding circumstances must be taken into consideration when assessing confusion between marks, including inherent distinctiveness, length of time in use, the nature of the goods, services and trade, and the degree of resemblance visually, phonetically and conceptually.

Based on the evidence before her, the registrar had found that Esso’s mark had some acquired distinctiveness in the Canadian marketplace, but she was unable to determine the extent to which Mövenpick’s mark had become known. In assessing the length of time the marks had been in use, the registrar found that, despite the date of Mövenpick’s registration being May 1992, Mövenpick had failed to provide evidence of actual use or inference of continued use, while Esso had established its use as of July 2001. In turning to the nature of the services and trade, the registrar thought that it was unlikely that the parties’ trades would overlap; however, she did note that Mövenpick’s registration did not include any limitation that would prevent it from operating fast-food restaurants at gasoline stations. Finally, in her review of the degree of resemblance between the marks, the registrar was satisfied that the word 'express' differentiated the marks when sounded and in ideas suggested by them.

The new evidence before the court relevant to the issue of confusion was Mövenpick’s evidence establishing the extent to which its mark had become known in Canada. However, the court held that the evidence was insufficient to overcome the extent to which Esso’s MARCHÉ EXPRESS mark had become known.

The court noted that the decision of the registrar, whose daily task involves determining confusion, should be given great weight. It then concluded that the new evidence before it would not have changed the registrar’s decision, and found that there was no likelihood of confusion between the marks.

Through the objections to the Esso's MARCHÉ EXPRESS mark, it was established that Mövenpick’s mark MARCHÉ is a commonly used term in the food industry and, as such, its registration rights were awarded a narrow ambit of protection in the marketplace.

Jennifer Powell, Powell Trade Mark Services, Vancouver

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